What is the effect of alternative variations on a PPA? 4 Answers as of June 02, 2011

I am completing a provisional patent application (PPA). If my invention is found to be patentable but my alternative variation is found to be not patentable, is my PPA still valid for my orignal invention described in the PPA?

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A provisional patent application automatically expires after the conclusion of twelve months from the filing date. Any changes to a provisional patent, could be included in a non-provisional application claiming the benefit of the earlier filed provisional patent application. However, if you do not include the changes, alterations of modifications of the provisional application in the non-provisional application, they are not covered in a patent application. Depending on your situation, you may need to file a new patent application. Hope that helps.

Provisional patent applications are not examined. However, if a claimed embodiment in a non-provisional patent application is found patentable during examination, an alternative, claimed variation that is found not patentable will not invalidate the patentable embodiment.

It is difficult for me to envision an invention in which a variation is not patentable, but other variations are patentable. However, questions such as yours are dependent on what the invention is (and how it is claimed in your patent application) and what the prior inventions have accomplished. I strongly recommend you contact a licensed patent attorney. If you file your provisional application without consulting a patent attorney, you may be making mistakes which cannot be fixed. For example, you cannot add "new matter" (including new variations) to your provisional application after you have filed it.

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